• Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution denied
  PTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24

  • BurdenNot shown unpatentable

    “the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,589,541
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCInstitution denied
  PTAB · Oct 13, 2023 · IPR2023-00665 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 9 was anticipated by Malladi or that claims 1–6 and 9–14 were obvious over Malladi-based combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In order to reach item 846, the UE must first perform step 820, which says “Decode the PDCCH for possible assignment.” Ex. 1005, Fig. 8. In order to decode a PDCCH, the PDCCH must first be detected. Additionally, the [0, 0] code which is sent in step 846 of Malladi Figure 8 also shows that the PDCCH was detected but improperly decoded. Malladi Figure 6 “shows four formats for fixed-size CQI and ACK information.” Ex. 1005 ¶ 16. In each of those formats, [0, 0] means “Missed PDCCH.” Ex. 1005, Fig. 6. Malladi further explains, in a detected, but incorrectly decoded such that the control information is missed: “[T]he UE incorrectly decodes the PDCCH and misses the control information.” Ex. 1005 ¶ 61 (emphasis added). In summary, the portions of Malladi describe a situation where a PDCCH was detected but incorrectly decoded, leading to a situation where the control information was missed/not received by the UE. In other words, Petitioner has not sufficiently shown, based on the current record, that Malladi discloses “when the user equipment fails to detect the physical downlink control channel corresponding to the transmitted data in the sub-frame which transmits the data” as recited in claim 9. Accordingly, Petitioner has not shown a reasonable likelihood of” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Ex. 1001, 4:18–31 (highlighting added). The yellow highlighted language above describes a situation in which the UE “fails to detect.” The paragraph goes on with the disjunctive “or” (red) followed by a second situation where the UE “fails to receive the data” (light blue). See Ex. 1001, 4:18–31. The use of the disjunctive “or” implies that the failing to detect is different than failing to receive. Indeed, if the ’881 patent considered the fails to receive the same as fails to detect, there would be no need to list both items. However, the language recited in claim 9 only recites “fails to detect,” thus indicating that fails to receive is not encompassed by the claim. Thus the issue is whether Malladi discloses a UE that fails to detect or fails to receive. Based on the current record, Petitioner has not sufficiently shown that Malladi discloses a UE that fails to detect as recited in claim 9.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Claim 1, like claim 9, recites substantially the same limitation discussed in the preceding section. Compare limitations [9.pre-1] and [9.c] (Ex. 1001, 12:55–58 and 13:18–20) with limitation [1.e] (Ex. 1001, 11:44– 47). Petitioner argues that “[t]he Malladi-TDTech combination discloses claim element[] . . . 1.e for substantially the same reasons Malladi discloses claim element[] . . . 9.c, . . . which recite the same or substantially the same features.” Pet. 53 (omission relate to other claim limitations). Petitioner further argues that the difference between Malladi and the Malladi-TDTech combination are “immaterial” for this limitation. Pet. 54. Stated differently, Petitioner does not argue that TDTech cures the deficiency associated with limitation [1.e]. deficiency associated with limitation [9.c]. Pet. 57. Nor does Petitioner argue that any of the other references it relies on relate to limitation [1.e] or [9.c]. See Pet. 58–71. Accordingly, for the reasons discussed in the previous section, Petitioner has not shown a reasonable likelihood of showing that the subject matter of claims 1–6 and 9–14 would have been unpatentable based on Malladi and TDTech, either alone or in combination with additional references. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Patent Owner argues that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 15. and undisputed by Patent Owner, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,881
• Microsoft Corporation / Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Apr 7, 2023 · IPR2022-01420 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 36, or 37 were unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’398 patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user or entity profile management or web-based targeted content delivery, or a related field. A person also could have qualified with more formal education and less technical experience, or vice versa. Pet. 17–18 (citing Ex. 1002 ¶ 11). “Patent Owner does not challenge this definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,677,398
• Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Mar 29, 2023 · IPR2022-01507 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that de Heer, alone or with the other references, disclosed or rendered obvious the required association of identifiers for claims 1, 16, and …

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’198 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We are persuaded Petitioner has not shown that de Heer discloses the recited association. Patent Owner is correct that the claim language requires the association of identifiers: the first online user interface device identifier and the first set top box identifier are associated. Ex. 1001, 25:32−33. Petitioner relies on the theory that de Heer’s IP address assignment anticipates the claim. But de Heer’s IP address, as pointed by Patent Owner, corresponds to either a single IP address or a range assigned to a particular household. See Prelim. Resp. 11−12. Having a common IP address or an IP address in an assigned range, however, does not itself disclose the recited association of identifiers. De Heer does not describe the “common IP address” as a way to associate two identifiers. Indeed, as Patent Owner points out, de Heer determines that the client corresponds to a particular household without describing any associations being used by the database to locate the interaction data or the advertisement. See id. And Petitioner’s assertion that the advertising service associates the two devices merely because of a “common IP address” is insufficient by itself for de Heer to anticipate the claim. See Pet. 27 (stating “that determining that STB and computer have a common IP address as “seen” by online advertising service 110, the online advertising service 110 associates the two devices”). At best, de Heer describes that a client’s IP address may be used to” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “has not shown de Heer anticipates claims 1 and 18. We are also not persuaded that Petitioner has shown that de Heer and Cameron render obvious claims 1 and 18. Pet. 60−63. Petitioner relies on Cameron for its disclosures of collecting data through a set-top box anonymously. Id. (“Cameron describes anonymously collecting viewership data from television programs delivered to the viewer through a set-top box.”). That is, Cameron is not relied upon for teaching the “association of identifiers” and Petitioner did not show that Cameron teaches association of identifiers as required by the claim, separately or as an alternative to de Heer. Thus, the de Heer/Cameron obviousness grounds fails to meet the reasonable likelihood threshold for the same reasons as stated for the anticipation ground discussed above. The remaining challenged claims depend directly from independent claims 1 or 18, and Petitioner contends these claims are also anticipated by de Heer or rendered obvious by de Heer/Cameron in combination with other asserted references. Pet. 34–42, 63−65. None of the additional references— Martinez and Roetter—cure the deficiencies noted above regarding the “wherein limitation.” Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing on its assertions concerning the challenged dependent claims (claims 16, 19−25).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(POSA) “would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with Internet or similar network-related processes and/or systems including, for example, online content delivery, such as targeted advertisements, or a related field,” but that “[m]ore education can supplement practical experience and vice versa.” Pet. 4–5 (citing Schonfeld Decl. ¶¶ 20–21). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. At this stage of the proceeding, and given the lack of dispute concerning the proposed level of ordinary skill in the art, we adopt Petitioner’s assessment, which at this juncture appears reasonable given the specification of the ’198 patent and asserted prior art of record.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,321,198
• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Mar 13, 2023 · IPR2022-01324 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 9–12 unpatentable over Beyda alone or in combination with Narin and Detering.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, we determine based on the record before us that there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We need not provide an explicit construction for “BT company,” nor an explicit construction for “third party computer system.” The parties agree that the claimed “BT company” and the claimed “third party” are distinct entities, in other words, the BT computer system is controlled by a distinct entity from the entity that operates the third party computer system controlling advertising space. See Pet. 22 (“‘BT company’ . . . means ‘an entity that targets ads for placement in advertising space controlled by another party . . . .’” (italics added), Ex. 1001, 14:13–15 (“a third party computer system controlling advertising space.” (italics added)); Pet. 33 (citing Ex. 1015, 44). The prosecution history and ’615 Patent Specification support the distinction between the BT company and third party. See Ex. 1001, 8:56–63, 9:23–46, 9:66–10:19; Ex. 1004, 102 (cited by Pet. 19).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’615 Patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user profile management and/or web-based targeted content delivery, or a related field. A person could have qualified with more formal education and less technical experience, or vice versa. Pet. 20 (citing Ex. 1002 ¶¶ 8–13). “Patent Owner does not challenge that definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that Beyda discloses “[a] computer system controlled by a behavioral targeting company (BT company),” as recited in the preamble, and “a third party computer system controlling advertising space,” as recited in the first limitation of claim 9. See Pet. 22–23, 27–39. As explained above in Section II.A., both parties agree that the BT company and third party are distinct entities. As highlighted above in Section II.A., Petitioner asserts that a “BT company” means “an entity that targets ads for placement in advertising space controlled by another party.” Pet. 22–23 (emphasis added). Petitioner does not direct us to where Beyda discloses a computer system controlled by a first entity that is distinct from the third party (i.e., another party) operating the computer system controlling advertising space. See Pet. 27–39; Prelim. Resp. 10. We agree with Patent Owner that the Petition’s assertion of a distinction between Beyda’s data warehouse and Beyda’s targeting engine, external content computer components performing the operations of the targeting engine and the data warehouse. See Pet. 33–34; Prelim. Resp. 9–10. Therefore, the Petition does not establish that Beyda’s data warehouse is controlled by a first entity that is distinct from the entity (i.e., another party, third party) operating Beyda’s targeting engine, external content servers, and web servers controlling advertising space. To the extent that the Petition asserts that Beyda inherently discloses “[a] computer system controlled by a behavioral targeting company (BT company)” and “a third party computer system controlling advertising space,” we do not agree. The Petition’s assertion that “[t]o a [person of ordinary skill in the art], the description of this functionality [(extractor program, targeting engine program, data warehouse)] existing on multiple servers teaches that one or more parties could operate portions of what Beyda describes as system 10” is insufficient because inherency cannot be established by possibilities and probabilities. Pet. 29 (bolding and underlining added); see Therasense, 593 F.3d at 1332. For these same reasons, we also find insufficient the Petition’s assertion that a person of ordinary skill in the art “would have further understood Beyda to teach that Beyda’s system embodiments could be controlled by a behavioral targeting company.” Pet. 32 (bolding and underlining added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615
• ROKU, Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01258 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that Alger anticipated claims 184, 185, and 188–190 or that Alger-based combinations rendered claims 186, 187, 189, 191, and 192 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • Parallel petitionsNot reached

    “1 Roku also filed a Notice Ranking Petitions, arguing that we should institute trial both in this proceeding and in IPR2021-01257 where Roku challenges the same claims of the ’819 patent on different grounds. Paper 3; see also Paper 8 (IOENGINE’s response). Because we deny institution on the merits, we need not address whether it would be appropriate to institute trial in both proceedings.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 21–22 (citing Ex. 1103 ¶¶ 54–58). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1103 ¶¶ 54–58). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 8. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1101, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 13. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 14. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1101, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,447,819
• ROKU, Inc. v. Ioengine, LLCInstitution denied
  PTAB · Feb 7, 2023 · IPR2022-01257 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that Ozawa or Clanton disclosed the claimed terminal, and the dependent-claim obviousness grounds did not cure that deficiency.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Relying on Dr. Lippman’s testimony, Roku argues that a person of ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 24–25 (citing Ex. 1003 ¶ 55). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1003 ¶ 55). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 15–16. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “terminal is key to our decision in this proceeding whether to institute trial, so we need to construe the term more specifically than the district court did. Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 20. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 21. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1001, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Analysis To show anticipation, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,447,819
• PNC Bank N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Mar 7, 2022 · IPR2021-01399 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Oakes I, Oakes II, Medina, and Roach qualify as prior art to claims 1–29.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina. IV. CONCLUSION In view of Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioner would prevail in challenging any one of claims 1–29 of the ’605 Patent as unpatentable.” slip op. at 28

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “important to the invention is that the image capture device and general purpose computer are communicatively coupled, not their locations relative to one another. See, e.g., id. ¶ 33; accord Prelim. Resp. 32–33. In addition, the ’974 Application does not limit its invention to only those remote deposits performed using a general purpose computer that is separate from an image capture device.10 The ’974 Application broadly describes the image capture device, noting it can be “a scanner or digital camera.” Ex. 1042 ¶¶ 21, 33. The ’974 Application also indicates that the general purpose computer and image capture device are “customer-controlled” and “electronics that today’s consumers actually own or can easily acquire.” Id. ¶¶ 21, 29, 33; see also id. ¶ 19. In light of these disclosures, we find that a person of ordinary skill in the art would have understood the ’974 Application to reasonably convey possession of both integrated and non-integrated configurations. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (explaining that claims with the generic step of “adheringly applying” one layer to an adjacent layer satisfied the written description requirement because “one skilled in the art who read [the] specification would understand that it is unimportant how the layers are adhered, so long as they are adhered”).” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28

  • Obviousness (§103) › Analogous artNot reached

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,013,605
• Gamber-Johnson LLC v. National Products Inc.Institution denied
  PTAB · Jan 3, 2022 · IPR2021-01159 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim, relying on the same-structure mapping and unsupported obviousness theories.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008))). D. Asserted Anticipation by Woud slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art. B. Claim Construction” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “support surface” (emphasis added). The structure Petitioner relies on as meeting the recited “female connector,” however, encompasses the entirety of the structure relied on as meeting the recited “docking support surface.” Compare Pet. 34–36, with id. at 33–34. As highlighted by Patent Owner, this raises a significant issue. See Prelim Resp. 24, 26–27. Our reviewing court explains that, [w]here a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Therefore, a single structure in Woud cannot be both the recited female connector and the recited docking support surface, nor meet the requirement that the female connector is disposed within the docking support surface where the entirety of structure relied on as the docking support surface is also the structure relied on as the female connector, as Petitioner contends. Petitioner offers no explanation or elements set forth in the claim. See Pet. Because we find Petitioner relies on the same structure for two distinct components of claim 1, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 1 is anticipated by Woud.5” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,706,026
• Innovative Intelligent Products, LLC D/B/A GPS Lockbox v. National Products Inc.Institution denied
  PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,630,334

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.